Monday, 4 July 2011

Inventors who conduct the proceedings before the EPO themselves often omit to pay the renewal fee for the third year, but it can also happen when professional representatives are in charge as the present case shows. It is one of those cases where you have the troika “U.S. attorney + EP attorney + fee company”, without which there would be much less restitutio case law.

Here the renewal fee for the third year fell due on April 30 2008. On June 4, 2008, the Receiving Section (RS) sent the [applicant] a notice in the usual form drawing attention to the fact that the renewal fee had not been paid and that the payment of that fee, together with the additional fee, could still be validly effected within six months following the due date. However, the EPO had received no payment by the expiry of that period.

So the RS informed the applicant, in a communication pursuant to R 112(1) dated and received on December 10, 2008, that the application was deemed withdrawn under A 86(1).

By letter dated and received on February 19, 2009, the representative on behalf of the [applicant] filed a request for re-establishment of rights under A 122. He paid the renewal fee for the third year, the additional fee and the fee for re-establishment of rights on the same date. In this request, the [applicant] stated that responsibility for the payment of the renewal fee had been delegated to the US attorney handling the case. Furthermore, the renewal fees were paid annually by a U.S. service company, Computer Packages Inc. (CPI).

The applicant argued that it had exercised all due care by delegating this responsibility to persons that professionally dealt with the payment of annuities. It added that the removal of the cause of non compliance occurred on January 9, 2009, when the European representative was informed by the new US attorney that the case had been transferred to him rather than when the European representative received the notice of loss of rights from the EPO.

The RS rejected the request for re-establishment; the present appeal is directed against this decision.

Here is the verdict of the Legal Board of appeal:

[1] According to established jurisprudence (Case Law of the Boards of Appeal of the European Patent Office, 6th edition 2010, page 496), when a time limit has been missed, the removal of the cause of non-compliance occurs on the date on which the person responsible for the application is made aware of the fact that the time limit has not been observed. The decisive factor here is when the person concerned ought to have noticed the error if he had taken all due care.

The representative has conceded that he received the notification of the loss of rights pursuant to R 112(1) on 10 December 2008 […].

Receipt of notification under R 112(1) is relevant to the question of when the cause of non-compliance with a time limit is removed. The significant date is that on which notification was actually received by a person responsible for the application (see J 7/82 [3-4]).

According to the established jurisprudence, no further ten days under R 126 will be added to this two months period. (T 428/98 and T 1063/03 [2]). The European representative no longer appears to dispute that.

[2] The European representative has submitted that he did not consider himself responsible for the administration of renewal fees. According to the representative, the US attorney handling the case was responsible for this matter. Furthermore, the renewal fees were paid annually by a service company, Computer Packages Inc. (CPI). Therefore, when notified of the loss of rights, he as the European representative was not aware that the time limit for paying the third renewal fee plus surcharge had been unintentionally missed.

The representative adds that he was informed by the US attorney by letter dated 9 January 2009 that the proceedings were now being managed by a new US attorney (Annexes 5 and 6), and that by letter dated 12 January 2009, he advised both the old and the new US attorneys of the notice of loss of rights dated 10 December 2008.

The representative concludes that 12 January 2009 was the date when the new US attorney discovered the error and that the request for re-establishment of rights should therefore be admissible.

The Board does not agree with these arguments.

[3] It is established jurisprudence of the boards of appeal that a European representative, once appointed - and even if the renewal fees are paid by someone else - remains otherwise fully responsible for the application, and that this includes a continuing obligation to monitor time limits, send reminders to the applicant, etc.

In the decision J 4/07 [4.1], the board noted that even if renewal fees are paid by someone else (e.g. a US attorney, a service company or even by the applicant himself), the appointed professional representative remains responsible for the proceedings before the EPO and has to take the necessary steps to ensure payment, if intended. This includes a reliable monitoring system and reminders to the applicant (see also J 11/06 [8]).

Nothing else can be derived from decision J 27/90 and especially from point [2.3], paragraphs 6 and 7 of the reasons, where it is stated that using an external agency to pay renewal fees does not constitute “circumstances to the contrary” which would affect the date of removal of the cause of non-compliance, and that the European representative remains responsible for the application.

Hence, in the present case, the date of the removal of the cause of the non-compliance is the date on which the European representative, taking all due care, would have noticed that the time limit had inadvertently been missed.

There is no evidence on file to indicate timely actions taken by the European representative in order to ensure that the renewal fee for the third year, plus surcharge were actually paid, or that an error was subsequently discovered.

Shortcomings on the part of third parties do not affect the date on which the European representative could have become aware of the non-payment of the fee.

The representative has acknowledged that he did not monitor the time limit for paying the renewal fee, and accordingly sent no reminder to the [applicant’s] US representative before expiry of the time limit for payment of the renewal fee plus surcharge. Had he done so, he could have established even before the expiry of that time limit that the [applicant] intended to pay the renewal fee. Upon receipt of the noting of loss of rights on 10 December 2008, the representative should have known that something had gone wrong and that payment had been unintentionally missed.

Furthermore, even if the representative did not positively know that the [applicant] intended to pay the renewal fee, upon receipt of the noting of loss of rights it would have been his duty to immediately inform the US patent attorney so as to ascertain whether non-payment had occurred inadvertently, or whether the [applicant] actually intended to let the application lapse. The European representative has not filed any evidence for his initial submission that he informed the US representative “immediately” after receipt of the noting of loss of rights. Instead, he has filed evidence - at a later stage - showing that he waited for more than one month before forwarding the loss of rights communication to the [applicant’s] US representative on 12 January 2009.

[4] For these reasons, the Board takes the view that the cause of non-compliance was removed on the date the European representative actually received the communication under R 112(1) pointing out that the renewal fee for the third year plus surcharge had not been paid in time and that a loss of rights had thus ensued.

This was also the European representative’s opinion in the request filed on 19 February 2009.

It is apparent from the wording of […] the request for re-establishment of 19 February 2009 that the representative’s reasons for regarding the request as having been filed in time on that day was his - mistaken - belief that the ten-day arrangement under R 126(2) applied when calculating the date of removal of the cause of non-compliance.

[5] Hence, the Board is of the opinion that the Receiving Section was correct in rejecting the request for re-establishment of rights as inadmissible. The appeal must therefore be dismissed.

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